Chief Judge Stark and Magistrate Judge Burke Hold Omnibus Section 101 Hearing

March 29, 2019

Publication| Intellectual Property

In three unrelated sets of cases,1  Chief Judge Stark and Magistrate Judge Burke jointly presided over an omnibus hearing on pending motions for unpatentability under 35 U.S.C. § 101. At the conclusion of the hearing, Chief Judge Stark ruled from the bench, granting six motions to dismiss on grounds of no patentable subject matter and denying one motion to reconsider an earlier finding of no patentable subject matter.

In explaining the rationale for this form of hearing, Chief Judge Stark stated that he was seeing many Section 101 motions being filed in which similar issues tend to recur, and that the Federal Circuit has also been active in this area. He hoped that this “experiment,” as he called it, could bring some efficiencies to the resolution of Section 101 disputes. In advance of the hearing, each party had to submit a letter identifying matters such as which claims were representative, and which Supreme Court or Federal Circuit case is most similar to the one before the District Court.

The judges first heard argument on each set of cases separately, then opened the proceedings for questions concerning individual cases and Section 101 issues generally. After a break, the Court issued its rulings. Chief Judge Stark cautioned against reading anything into the invalidation of the three patents involved in the hearing. According to the Court, it was just “luck of the draw,” and the Court noted that five sets of cases were originally scheduled. According to Chief Judge Stark, parties should not expect that he will invalidate every patent challenged on a Section 101 motion.

Key Point: Chief Judge Stark and Magistrate Judge Burke, as well as Judge Noreika, have subsequently scheduled similar omnibus Section 101 hearings.

1 Search & Social Media Partners, LLC v. Facebook, Inc., No. 17-1120-LPS-CJB; Location Based Servs., LLC v. Sony Elecs., Inc., No. 18-283-LPS, Location Based Servs., LLC v. Fantastic Fox, Inc., No. 18-1424-LPS-CJB, and Location Based Servs., LLC v. Mapillary Inc., No. 18-1425-LPS-CJB; and MOAEC Techs., LLC v. Deezer S.A., No. 18-375-LPS, MOAEC Techs., LLC v. SoundCloud Ltd., No. 18-376-LPS, and MOAEC Techs., LLC v. Spotify USA Inc., No. 18-377-LPS.

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